CHANGES TO REQUIREMENTS FOR PETITIONS TO THE COMMISSIONER
IN TRADEMARK CASES

Effective Date: October 30, 1999

This notices discusses changes to the requirements for filing petitions
to revive under Trademark Rule 2.66, 37 C.F.R. §2.66, and petitions
to the Commissioner under Trademark Rule 2.146, 37 C.F.R. §2.146,
effective October 30, 1999.

Contents

I. Petitions to Revive Abandoned Applications A. Requirements for Petitions to Revive B. Where the Unintentional Delay Standard Applies C. Where the Unintentional Delay Standard Does
Not ApplyII. Deadlines for Filing PetitionsIII. Due DiligenceIV. Requests for Reconsideration

I. PETITIONS TO REVIVE ABANDONED APPLICATIONS

Effective October 30, 1999, §§1(d)(4) and 12(b) of the Trademark
Act, 15 U.S.C. §§1051(d)(4) and 1062(b), and Trademark Rule 2.66,
37 C.F.R. §2.66, provide for revival of an abandoned application where
the delay in responding to an Office action or notice of allowance was
unintentional. A showing of "unavoidable delay" is no longer required.
All petitions to revive that are pending or filed on or after October 30,
1999, will be reviewed under the unintentional delay standard.

The procedural requirements for filing a petition to revive an application
abandoned for failure to respond to an examining attorney's Office action
are listed in 37 C.F.R. §2.66(b). The petition must include all of
the following:

(1) The petition fee required by 37 C.F.R. §2.6;

(2) A statement, signed by someone with firsthand knowledge of the facts,
that the delay in filing the response on or before the due date was unintentional;

(3) Unless the applicant alleges that it did not receive the Office
action, the applicant's proposed response to the Office action. The response
should be on a separate paper from the petition.

2. Requirements for Petition to Revive Application Abandoned for Failure
to File a Statement of Use - Notice of Allowance Received

The procedural requirements for filing a petition to revive an application
abandoned for failure to respond to a notice of allowance are listed in
37 C.F.R. §2.66(c). If the applicant received the notice of allowance,
the petition must include all of the following:

(1) The petition fee required by 37 C.F.R. §2.6;

(2) A statement, signed by someone with firsthand knowledge of the facts,
that the delay in filing the statement of use (or request for extension
of time to file a statement of use) on or before the due date was unintentional;

(3) Either a statement of use under 37 C.F.R. §2.88 or a request
for an extension of time to file a statement of use under 37 C.F.R. §2.89;
and

(4) The required fees for the number of requests for extensions of time
to file a statement of use that the applicant should have filed under 37
C.F.R. §2.89 if the application had never been abandoned.

Example: For example, if a notice of allowance was issued June
14, 1998, and a petition to revive was filed August 1, 1999, the petition
should be accompanied by: (a) either a statement of use or request for
an extension of time to file a statement of use, together with the required
filing fee; and (b) the fees for the extension requests due December 14,
1998 and June 14, 1999 (unless those fees had been previously paid). These
fees are in addition to the petition fee.

The Office will not grant a petition to revive an intent-to-use
application if the grant of the petition would extend the deadline for
filing the statement of use beyond thirty-six months after issuance of
the notice of allowance. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.66(d).

Filing a petition to revive does not stay the time for filing a statement
of use or further extension request. When a petition is granted, the term
of the requested six-month extension that was the subject of the petition
runs from the expiration date of the previously existing six-month period
for filing a statement of use. Thus, unless a statement of use is filed
with or before the petition, the applicant must continue to file extension
requests as they become due during the pendency of a petition. 37 C.F.R.
§§2.66(c)(5) and 2.89(g). If the petition is denied, the fees
for the extension requests filed during the pendency of the petition will
be refunded.

If the applicant fails to file a statement of use, or further request(s)
for extension(s) of time to file a statement of use while the petition
is pending, the applicant will be given an opportunity to perfect the petition
by paying the fees for each missed extension request and filing a copy
of the last extension request, or statement of use, that should have been
filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762 (Comm'r Pats.
1997).

3. Requirements for Petition to Revive Application Abandoned for
Failure to File a Statement of Use - Notice of Allowance Not Received

The procedural requirements for filing a petition to revive an application
abandoned for failure to respond to a notice of allowance are listed in
37 C.F.R. §2.66(c). If the applicant did not receive the notice of
allowance, the petition must include the following:

(1) The petition fee required by 37 C.F.R. §2.6; and

(2) A statement, signed by someone with firsthand knowledge of the facts,
that the applicant did not receive the notice of allowance, and that the
delay in filing the statement of use (or request for extension of time
to file a statement of use) on or before the due date was unintentional;

If the applicant does not receive the notice of allowance, it is not necessary
to file a statement of use or request for an extension of time to file
a statement of use, or the fees for the number of requests for extensions
of time to file a statement of use that would have been due if the application
had never been abandoned. 37 C.F.R. §§2.66(c)(3) and (4). If
the petitioner files an extension request with a petition that alleges
nonreceipt of the notice of allowance, the Office will cancel the notice
of allowance, refund the filing fee for the extension request, and forward
the file to the Publication and Issue Section of the Office to reissue
the notice of allowance.

If the petitioner files a statement of use with a petition that alleges
nonreceipt of the notice of allowance, the Office will give the petitioner
the option of (a) having the notice of allowance cancelled and reissued,
and the filing fee for the statement of use refunded; or (b) paying the
additional filing fees for the extension requests that would have been
due if the application had never been abandoned.

4. Establishing Unintentional Delay

Trademark Rules 2.66(b)(2) and (c)(2), 37 C.F.R. §§2.66(b)(2)
and (c)(2), require that a petition to revive include a statement, signed
by someone with firsthand knowledge of the facts, that the delay in responding
to the Office action or notice of allowance was unintentional. This statement
need not be verified. Generally, the Office will not question the authority
of the person signing the statement.

Except when alleging non-receipt of an Office action or notice of allowance,
it is not necessary to explain the circumstances that caused the unintentional
delay. The Office will generally not question the applicant's assertion
that the delay in responding to an Office action or notice of allowance
was unintentional, and will grant the petition, unless there is information
in the record indicating that the delay was in fact intentional. An example
of intentional delay is if an applicant intentionally decides to refrain
from filing a response or intent-to-use document because it no longer wants
to pursue registration of the mark, only to later decide that it does.

B. Where the Unintentional Delay Standard
Applies

Trademark Rule 2.66 applies only to the "failure" to respond to an Office
action or notice of allowance, including the failure to meet minimum filing
requirements for a statement of use or request for an extension of time
to file a statement of use.

The minimum filing requirements for a statement of use are set forth
in Trademark Rule 2.88(e), 37 C.F.R. §2.88(e): (1) the fee for at
least a single class of goods or services; (2) at least one specimen or
facsimile of the mark as used in commerce; and (3) a verification or declaration
signed by the applicant stating that the mark is in use in commerce.

The minimum filing requirements for a request for extension of time
to file a statement of use are: (1) a verified statement that the applicant
has a continued bona fide intention to use the mark in commerce; (2) a
specification of the goods or services on or in connection with which the
applicant has a continued bona fide intention to use the mark in commerce;
and (3) payment of the prescribed fee for at least one class of goods or
services. In re El Taurino Restaurant, Inc., 41 USPQ2d 1220, 1222
(Comm'r Pats. 1996).

An applicant who fails to meet the minimum filing requirements for a
statement of use or request for an extension of time to file a statement
of use has, in effect, not filed the statement of use or extension request.
Therefore, if the failure to meet the minimum filing requirements was unintentional,
the applicant may file a petition to revive under Trademark Rule 2.66.
(Note: If a statement of use is timely filed and meets the minimum
filing requirements that a statement of use must meet before it can be
sent to an examining attorney for examination under Trademark Rule 2.88(e),
Trademark Rule 2.66 does not apply. Therefore, Trademark Rule 2.66
does not apply to an application abandoned due to an examining attorney’s
refusal of registration on the ground that the applicant did not meet statutory
requirements before expiration of the time for filing the statement of
use (e.g., because the specimen(s) is unacceptable or the statement of
use was not filed by the owner - see TMEP §1105.05(f)(i)(A)).
The applicant may appeal the examining attorney’s refusal of registration
to the Trademark Trial and Appeal Board.)

An applicant may also file a petition to revive under Trademark Rule
2.66 if the applicant timely files a notice of appeal from an examining
attorney’s final refusal, but unintentionally fails to include the appeal
fee required by §20 of the Act, 15 U.S.C. §1070.

Trademark Rule 2.66 does not apply to the unintentional filing
of an incomplete response to an examining attorney's Office action. Incomplete
responses to examining attorneys' Office actions are provided for by Trademark
Rule 2.65(b), 37 C.F.R. §2.65(b), which gives the examining attorney
discretion to grant an applicant additional time to respond if the applicant's
failure to file a complete response is inadvertent. If the examining attorney
holds the application abandoned for failure to file a complete response
to an Office action, the applicant may file a petition to the Commissioner
to review the examining attorney's action under Trademark Rule 2.146, 37
C.F.R. §2.146. These petitions are decided using a clear error standard
of review. TMEP §1112.05; In re GTE Education Services, 34
USPQ2d 1478 (Comm'r Pats. 1994); In re Legendary, Inc., 26 USPQ2d
1479 (Comm'r Pats. 1992).

2. Registered Marks

Trademark Rule 2.66 applies only to abandoned applications. The unintentional
delay standard does not apply to an unintentional failure to respond to
an Office action relating to an affidavit or declaration of continued use
or excusable nonuse under §8 of the Trademark Act, 15 U.S.C. §1058,
or a renewal application under §9 of the Act, 15 U.S.C. §1059.
In these situations, the registrant may file a petition to the Commissioner
under Trademark Rules 2.146(a)(3) and 2.146(a)(5), 37 C.F.R. §§2.146(a)(3)
and 2.146(a)(5).

II. DEADLINES FOR FILING PETITIONS

Trademark Rule 2.66(a), 37 C.F.R. §2.66(a), requires that a petition
to revive an abandoned application be filed: (1) within two months of the
mailing date of the notice of abandonment; or (2) within two months of
actual knowledge of the abandonment, if the applicant did not receive the
notice of abandonment and the applicant was diligent in checking the status
of the application.

Trademark Rule 2.146(d), 37 C.F.R. §2.146(d), is amended to set
a two-month time limit for filing a petition to the Commissioner on a matter
if no deadline is set forth elsewhere in the rules for that type of petition.
Previously the deadline for filing these petitions was sixty days.

Trademark Rule 2.89(g), 37 C.F.R. §2.89(g), is amended to change
the deadline for filing a petition from the denial of a request for an
extension of time to file a statement of use from one month to two months
from the mailing date of the denial of the request.

These deadlines will be strictly enforced.

III. DUE DILIGENCE

Trademark Rules 2.66(a)(2) and 2.146(i), 37 C.F.R. §§2.66(a)(2)
and 2.146(i), require that the applicant/registrant monitor the status
of its pending file. If the applicant does not receive the notice of abandonment
or the registrant does not receive the notice of cancellation or expiration,
the petitioner must show that it diligently monitored the status. To be
considered diligent, a party must inquire within one year of the filing
or receipt of a paper for which further action by the Office is expected.
This codifies the longstanding past practice of the Office. TMEP §§413
and 1704. Even where a petitioner can swear that papers were mailed, or
that a notice from the Office was never received by the petitioner, the
Office will deny the petition if the petitioner waited too long before
investigating the problem. The rationale is that granting the petition
would be unfair to third parties who may have searched Office records and
relied to their detriment on information that an application was abandoned
or that a registration was cancelled. If the petitioner did receive the
abandonment notice or post registration notification, a showing of due
diligence is not required. Only the question of timeliness will be addressed.

A party can check the status of an application or registration through
the Trademark Status Line ((703)-305-8747), or through the Trademark Applications
and Registrations Retrieval (TARR) database on the Office's World Wide
Web site at http://www.uspto.gov/go/tarr/.
The party should keep notes in the party's own file as to the dates of
the status inquiries and the substance of the information learned. No further
documentation is required. Written status inquiries are discouraged.

IV. REQUESTS FOR RECONSIDERATION

Effective October 30, 1999, Trademark Rules 2.66(f) and 2.146(j), 37
C.F.R. §§2.66(f)(3) and 2.146(j), are amended to provide for
requests for reconsideration of the denial of a petition to revive under
Trademark Rule 2.66, or a petition to the Commissioner under Trademark
Rule 2.146, upon payment of a second petition fee under Trademark Rule
2.6. A second petition fee will be required for any request for reconsideration
reviewed on or after October 30, 1999.

A request for reconsideration must be filed within two months of the
mailing date of the decision denying the petition.

If the petitioner presents new facts that warrant equitable relief,
or there is a new standard of review for the petition, the Office may grant
the petition upon request for reconsideration. However, the Office will
generally deny the petition if the request for reconsideration merely reiterates
or expands on arguments previously presented.

Since contested matters must be brought to a conclusion within a reasonable
time, the Office will grant a petition upon a second request for reconsideration
only in those rare situations where the petitioner presents significant
facts or evidence that was not previously available. In re American
National Bank and Trust Company of Chicago, 33 USPQ2d 1535 (Comm'r
Pats. 1993).